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(Photo credit: methodshop.com)

Google ($GOOG) makes billions of dollars a year selling AdWords ads triggered by third party trademarks. Over the past decade, trademark owners have brought about 20 lawsuits against Google challenging these ad sales. These lawsuits have ranged from high-stakes class action lawsuits (the FPX lawsuit) to well-funded challenges by big trademark owners (e.g., the Rosetta Stone ($RST) and American Airlines lawsuits) to poorly funded lawsuits by no-name trademark owners like the case I discuss in this post. In a remarkable litigation tour-de-force, Google has never definitively lost any of these cases in court (though it has occasionally lost intermediate rulings). At the same time, Google hasn't definitively won any of its cases in court either. This makes Google's recent wi in an AdWords trademark case noteworthy.

Daniel Jurin owns the trademark "Styrotrim" for building materials. The first time he sued Google, he lost his lawyer and voluntarily dismissed the lawsuit, which led to a $6,000 sanction against him. Jurin found a new attorney and tried again, and even got a surprising intermediate win on his "false association" claim. However, Jurin lost his second lawyer--and his litigation mojo. As a result, Jurin didn't contest Google's summary judgment motion, giving Google an easy courtroom win. With minimal analysis, the court says that Jurin didn't provide any evidence of actionable consumer confusion, false advertising or sufficient fame to support a trademark dilution claim.

Jurin's fizzling out also reminds us that suing Google for trademark infringement remains a bad business decision. Google will spend whatever it takes to defend its cash cow--far more than it's worth to any individual trademark owner, especially a small player like Styrotrim, to sue Google. Recently, we've seen a couple of ill-advised new trademark lawsuits by other small-time players (CYBERsitter and Home Decor Center). Google will win those cases, probably because those plaintiffs will give up--just like many other trademark owners (including American Blinds, Ascentive, Ezzo, Rescuecom, Parts Geek, Soaring Helmet and others) have voluntarily done after tangling with Google.

Rosetta Stone (software) (Photo credit: Wikipedia)

The most dangerous pending AdWords-related trademark lawsuit is the Rosetta Stone case. Despite the Fourth Circuit's revitalization of the case, I believe Google will win that lawsuit (or settle on favorable terms). As a result, I predict that Google will soon finish the job of establishing a clean bill-of-health on the legitimacy of selling third party trademarks to trigger keyword advertisements. Microsoft ($MSFT), Yahoo ($YHOO) and other sellers of trademark-keyed ads (such as Twitter) should all benefit from that outcome too.